As the Federal Circuit reaffirmed in Seagate,[1] opinions of counsel are not required to fend off allegations of willful infringement.[2] But in Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683 (Fed. Cir. 2008), the Federal Circuit recently held that such opinions are relevant to intent to induce infringement under 35 U.S.C. § 271(b).

Because inducement and willfulness both require intent, there is some overlap in relevant evidence as well as jurisprudence between these two issues. But in separate en banc opinions in the last couple of years, the Federal Circuit has adopted different quanta of intent necessary to establish inducement and willfulness. In DSU,[3] the court required proof of “specific intent” to induce infringement, including knowledge of the patent; mere knowledge of another’s acts subsequently found to constitute direct infringement were deemed insufficient.[4] Although the court noted that the alleged inducer in DSU had obtained non-infringement opinions as part of the evidence considered by the jury, which returned a verdict of no inducement, the Federal Circuit did not directly discuss the role of opinion of counsel evidence in DSU.

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